DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/15/25 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 10/15/25, claims 1-12 are currently pending in the application, with claim 10 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objection
Claim 1 is objected to because of the following:
Claim 1 recites the term “poly(methyl methacrylate)”, which implies a homopolymer of methyl methacrylate. Claim 2 depends on claim 1 and recites the poly(methyl methacrylate) as comprising a methyl methacrylate copolymer. Given that poly(methyl methacrylate) according to the instant disclosure encompasses homopolymer and copolymers of methyl methacrylate (page 3, lines 25-37), Applicant is advised to amend claim 1 for improving clarity, as supported by the disclosure.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-9, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Berdin et al. (of record).
Regarding claims 1-4, 11 and 12, Berdin teaches an antistatic composition comprising, based on the total weight of the composition, 55% to 99.9% by weight of methyl methacrylate homo- /copolymer, and 0.1% to 45% by weight of at least one block copolymer containing polyamide (PA) block and a polyether (PE) block and comprising 55-75 wt.% of PEG polyether block, with respect to the block copolymer weight (reads on copolymer). Berdin teaches copolymers of methyl methacrylate (at least 70% by weight), and a (co)monomer, preferably, of an alkyl acrylate in which the alkyl group contains 1 to 4 carbon atoms (0.3 to 30 % by weight), having a mass average molecular mass of more than 50,000 or 100,000 g/mol or more (Ab., [0031]-[0036], [0074]-[0076], ref. claims).
Berdin is silent on a composition comprising poly(methyl methacrylate) having claimed loss factor (tan ratio.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching on a composition comprising a methyl methacrylate (co)polymer (55% to 99.9% by weight) comprising methyl methacrylate units and an alkyl acrylate units with 1 to 4 carbon atoms in the alkyl group (0.3 to 30 % by weight), it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an antistatic composition comprising methyl methacrylate (co)polymer and a (block) copolymer within the scope of Berdin, including those that fall within the scope of the claimed invention. A skilled artisan would reasonably expect Berdin’s methyl methacrylate (co)polymers having same structural units in same amounts to inherently have the claimed tan d, or in the alternative, reasonably expect the same to have the claimed tan d, absent evidence to the contrary.
Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. In re Best, 195 USPQ 430, 433 (CCPA 1977). When there is sound basis for believing that the products of the Applicant and the prior art are the same, the Applicant has the burden of showing that they are not. In re Spada, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1990). When the prior art discloses all limitations of a claim except a property or function, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention, basis exists for shifting the burden of proof to the Applicant. In re Fitzgerald et al., 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980). See MPEP 2112-2112.02.
Regarding claim 5, Berdin teaches polyether blocks comprising alkylene oxide motifs obtainable from polyethylene glycol, polypropylene glycol, polytrimethylene glycol and/or polytetrahydrofuran, and mixtures thereof [0074]-[0075], thereby obviating a combination as claimed.
Regarding claims 6-8, Berdin teaches polyamide blocks and polyether blocks at 50 wt.% or more, thereby obviating the polyamide blocks and copolymers thereof [0057]-[0076].
Regarding claim 9, Berdin teaches compositions that do not contain an organic salt [0093].
Claims 1-9, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami (JP 05-287157A, machine translation attached herewith, cited in IDS dated 7/1/25).
Regarding claims 1-3, 11 and 12, Kawakami teaches an acrylic resin composition having excellent permanent antistaticity, comprising an acrylic resin (A) (70-97 wt.%) and a polyamide elastomer (3-30 wt.%) consisting on a polyether block and a polyamide block (Overview). Disclosed genus of ingredient (A) includes polymethyl methacrylate homopolymer, and copolymers of methyl methacrylate with methyl, ethyl, propyl or butyl (meth)acrylates, including methyl methacrylate-ethyl acrylic acid copolymers [0013]. Kawakami additionally teaches that the acrylic resins may be produced my known methods, such as suspension, emulsion and bulk polymerization methods [0013].
Kawakami teaches examples comprising on acrylic resins comprising methyl methacrylate and methyl acrylate units (90:10 wt.% (DELPET 6N); 94:6 wt.% (DELPET LP-1); 97.5:2.5 (DELPET 80N)), and an acrylic resin comprising methyl methacrylate and ethyl acrylate units (85:15 wt.%) ([0070]-[0071], Table 1).
Kawakami is silent on a composition comprising poly(methyl methacrylate) having claimed loss factor (tan ratio.
As stated in paragraph 8 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Given the teaching in Kawakami on a composition comprising a methyl methacrylate (co)polymer (70-97 wt.%), such as copolymers of methyl methacrylate with methyl, ethyl, propyl or butyl (meth)acrylates [0013], and polyamide elastomer (3-30 wt.%) consisting on a polyether block and a polyamide block, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an antistatic composition comprising methyl methacrylate (co)polymer and a polyamide elastomer within the scope of Kawakami, including those that fall within the scope of the claimed invention. Additionally, a skilled artisan would reasonably expect Kawakami’s methyl methacrylate (co)polymers comprising same structural units in same amounts to either inherently have the claimed tan d, or in the alternative, reasonably expect the same to have the claimed tan d, absent evidence to the contrary. The discussion from the latter part of paragraph 9 above is incorporated herein by reference.
Regarding claims 4 and 5, Kawakami teaches poloxyethylene residues [0010], in addition to other segments, such as polypropylene glycol, polytetramethyleneglycol, etc. [0012].
Regarding claims 6 and 7, disclosed polyamide segments that overlap in scope with those of the claimed invention, and a content thereof at 25-60 wt.% [0011], [0014]-[0015].
Regarding claim 8, Kawakami teaches polyamide elastomer comprising poloxyethylene segments [0016]-[0017], and polyamide segments of overlapping scope [0011], [0014].
With regard to claim 9, Kawakami teaches a composition comprising (A) an acrylic resin, (B) a polyamide elastomer, and (C) 9-90 % by wt. of an electrolyte, i.e., salt is optional (ref. claim 1).
Response to Arguments
In view of the response dated 10/15/25, the rejections of record are withdrawn and rewritten herein above. Applicant’s arguments dated 10/15/25 have been duly considered.
Applicant asserts that the Office has made a false assumption that the same components in a PMMA necessarily result in the same tan δ value, that it is not technically accurate. Applicant argues that several parameters influence the tan δ value, such as the degree of branching, crosslinking and molecular weight distribution, that a highly branched structure may exhibit greater elasticity and a lower tan delta; that crosslinking can typically lower the tan d value; and a broader molecular weight distribution may introduce both long tails (potentially increasing elasticity) and many more dominant short chains (potentially increasing viscous loss), potentially increasing tan d versus a composition with narrow molecular weight distribution. Applicant argues that without a teaching on degree of branching, degree of crosslinking or molecular weight distribution in Berdin, it cannot be said that the claimed tan d would necessarily result from the composition of Berdin.
Referring to PMMA 1, PMMA 2, PMMA 3, PMMA 4 and PMMA 5 of exemplified embodiments in the disclosure, Applicant points out that PMMA 3, PMMA 4, and PMMA 5 all have a loss factor tan δ outside the claimed range although they fall within the scope of Berdin, that Berdin does not teach the chain architecture of PMMA 1 and PMMA 2, such as the degree of branching in the polymer chain, crosslinking, or molecular weight distribution. Applicant concludes that it cannot be asserted that the claimed loss factor tan δ necessarily is present in Berdin.
In response, while Applicant argues about specific parameters that may impact the tan d values, notably, the present disclosure is also silent on what the degree of branching, crosslinking and molecular weight distribution of poly(methyl methacrylate) (co)polymers that fall within the scope of the present invention are. Applicant’s arguments are not backed by evidentiary data to show how the claimed methyl methacrylate (co)polymers are patentably distinct from the methyl methacrylate (co)polymers that fall within the scope of Berdin. Regarding the arguments that the degrees of branching and crosslinking may negatively impact the tan d values, it is to be noted that Berdin does not teach crosslinking/branching monomer units as being essential to the methyl methacrylate (co)polymers, implying linear polymer chains. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Applicant further argues that the claimed compositions (with the claimed loss factor tan δ) provide surprisingly improved results as compared to composition similar in composition (but without the claimed loss factor tan δ, Table 1 (inventive examples vs. comparative examples), that the inventive examples use a PMMA with a loss factor tan δ of 30 or 15 while the comparative examples use a PMMA with a loss factor tan δ of 4.6, 3.7, or 3.1, that the results clearly demonstrate that the inventive examples exhibit better antistatic/anti- dust properties and less alteration of the Vicat point than comparative examples, whilst still providing an improved impact resistance compared to PMMA alone.
In response, Berdin’s teachings and the scope of inventive PMMA 1 and PMMA 2 of examples, as summarized in the final office action, is presented below:
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Clearly, Berdin teaches MMA copolymers of overlapping scope and may include the same structural units and have the same Mw range as in PMMA 1 and PMMA 2. Thus, absent a clear indication of that Berdin’s (co)polymers of overlapping are distinct from the claimed methyl methacrylate copolymers be expected of Berdin’s MMA copolymers of overlapping scope, absent evidence to the contrary.
Regarding the asserted unexpected results, considering the data in TABLE 1 of the specification, the compositions comprising inv. PMMA 1 and PMMA 2 appear to show a slight improvement in log SR value compared to comp. examples (may be as little as 6% greater SR for comp.). Even so, the data on record is limited to specific compositions comprising specific copolymers PMMA 1/PMMA 2 and PEPA 1/PEBA 2 in specific amounts.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762